Australian National Phase

PCT National Phase Entry Deadline

The deadline for national phase entry into Australia is 31 months from the earliest priority claim whether or not International Preliminary Examination has been requested (Chapter II Application). If you've missed the deadline, there may still be hope. Read more.

Minimum Filing Requirements for English Language PCT Applications

Information identifying the PCT Application, i.e. at a bare minimum the PCT number but preferably the WIPO publication number and/or a copy of the front page of the WIPO pamphlet. No Power of Attorney is required for me to represent your client before the Australian Patent Office and there are no declarations that have to be signed by the inventor. In my capacity as Australian patent attorney I can sign all necessary documentation on your behalf.

Translations

If the PCT application and the pamphlet are in a language other than English then a copy, certified by its translator as a true and complete translation, must be lodged with the Australian Patent Office by the national phase entry deadline.

If the priority document is in a language other than English then a certified English language translation of the priority document may be requested by the Examiner during examination. This happens if a validity-related issue arises during examination in which the determination of the correct priority date becomes important. At least five months are usually provided to supply the certified translation.

Novelty Requirements

Australia is a first-to-file, absolute novelty country so that publication of the invention or public use anywhere in the world before the priority date invalidates any patent granted on an application. However, see below regarding the Grace Period exception to this.

Grace Period

Australia has a twelve month grace period. According to the grace period provisions non-confidential disclosure, made by the inventors or their successors in title is not invalidating so long as a complete Australian patent application is filed within twelve months of the disclosure. The filing of a PCT application designating Australia is sufficient to trigger the Grace Period. No declarations as to when the first disclosure was made have to be lodged.

There is a limitation to the Grace Period in that if a third party takes steps to exploit the invention prior to the filing of the Australian patent application then that third party will be immune from infringement once the application has proceeded to grant. Consequently the Grace Period should only be relied upon if absolutely necessary.

The grace period is not triggered by the filing of a provisional application, only by the filing of a standard or innovation Australian patent application or an international application designating Australia. This is a complex area so please contact me if you have any specific questions barry@beagar.com.au.

Request for Examination

Examination must be requested within five years of the application date. For national phase entries of PCT applications the application date is taken to be the international filing date. Depending on the Patent Office's workload, a Direction to Request Examination normally issues within 6-18 months of national phase entry. Once a Direction issues there is a period of six months in which a request for examination must be lodged. Examination may also be requested earlier at any time.

Modified Examination

It is possible to request a Modified Examination where a counterpart application has granted in New Zealand, Canada, the U.S.A. or any of the countries that are signatories to the European Patent Convention.

If Modified examination is requested a certified copy of the counterpart granted patent must be lodged. The Australian application must be amended to conform to the granted foreign counterpart. The primary investigation that is then carried out by the Australian Patent Office is to determine if the Australian application has claims that match those of the counterpart patent.

It is important to note that the Examiner is not under an obligation to accept the application if Modified Examination is requested. He or she still has a discretion to raise objections. This is particularly the case where the granted patent founding modified examination is from New Zealand, where inventive step examination is not carried out.

Notice of Entitlement

A statement explaining how rights to the invention have transferred to the applicant must be lodged prior to acceptance of the patent application. The Notice of Entitlement must also attest that the applicant has the right to claim priority from the basic application or applications.

Amendments Prior to Acceptance

Voluntary amendments may be lodged after the national phase has been entered, either before or after an examiner's report issuing. The amendments must not result in matter being claimed that was not in substance disclosed at the filing date of the application.

Amendments After Acceptance

Voluntary amendments can also be lodged after acceptance of a patent application has been advertised. However any amendments to the claims must be such that they fall within the scope of the claims that were accepted.

Third Party Notices

Third parties may lodge Notices under s27 or s28 of the Patents Act alleging that a published patent application, or innovation patent undergoing certification examination, does not meet novelty and inventive step / innovative step requirements and identifying relevant prior art.

Third Party Opposition to Grant

Third parties can oppose the grant of a standard patent once the application has been advertised in the Official Journal as accepted for a period of three months. Subsequent to lodging the Notice a Statement of Grounds and Particulars must be lodged setting out the reasons why the patent should not proceed to grant.

Oppositions to certified innovation patents may be lodged at any time.

Re-examination

Re-examination may be requested on a granted Australian patent.

Only novelty and inventive step issues are considered during re-examination. Prior art that was previously considered during examination can be included in a request for re-examination.

This webpage is meant to provide general background information only about Australian patent practice.  If you have a specific problem then please contact me.

 

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